Posts Tagged: "trademark registration"

But deciding to apply for a federal trademark registration isn’t the end-all-be-all. Frequently a name or mark is selected for a business without a trademark search ever being done. That can be extremely costly if it is later learned that some other individual or company has been already been operating under that name or mark. Even in the situation where no trademark infringement liability attaches, the second comer will need to stop using, give up on any good will already developed and move on. This can be quite costly, just in terms of recalling and revising advertising campaigns, letterhead, business cards and the like. The best advice is, therefore, to always do a trademark search and file for a United States Trademark.

On December 12, 2013, Members of the House and Senate introduced bipartisan legislation that would allow the United States or any state or local government to register official insignia for federal trademark protection. This bill would amend the Trademark Act of 1946, also known as the Lanham Act, to allow the Federal government as well as all State and local governments to register with the U.S. Patent and Trademark Office (PTO) marks consisting of their flag, coat of arms and other official seals.

But this article is less concerned with actual imperialism, and more with cultural imperialism –particularly the “invasion” of this country by that once all-American, but now global, fast-food chain known variously in its land of origin as McDonald’s, the Golden Arches and Mickey-D’s. Here in Australia, however, McDonald’s most prevalent nickname is “Macca’s”. A recent branding survey commissioned by McDonald’s Australia found that 55 per cent of Australians refer to the company by its local slang name. But the temporary Macca’s rebranding also raises some interesting trademark issues.

Trademark owners who attempt to file and prosecute their own trademark applications are really being pennywise and pound foolish. I appreciate the reasons for filing your own trademark applications, particularly in this economy. Many times, trademark owners are small companies in their infancy, or individuals that are trying to minimize legal fees while attempting to obtain valuable trademark protection. Nevertheless, there is significant long term damage that can be caused by filing your own trademark, or relying on a one-size-fits-all service provided by non-attorneys.

Leason Ellis LLP, an intellectual property law firm located in White Plains, New York, recently filed a complaint against USA Trademark Enterprises, Inc. of Sarasota, Florida. The multi-count Complaint alleges that USA Trademark Enterprises has engaged in false advertising and unfair competition by marketing a catalog of trademark registrations, which offers no value because the published information is freely available in the online records of the U.S. Patent and Trademark Office. David Leason, Managing Partner of Leason Ellis, said “by targeting our clients and us, USA Trademark Enterprises has interfered in our business and cast a shadow over the legitimacy of trademark-related communications. In filing suit, we are out to protect our clients, our business, and the integrity of the trademark process from predatory and deceptive marketing.”

When seeking to obtain a United States trademark there are a number of different steps to the process, and even after the trademark has issued there are several key events that must be planned for in order to continue to maintain the trademark in good standing. Before moving forward to elaborate it is vitally important to understand that once you file a trademark application it will be necessary to promptly respond to any inquiries made or issues raised by the Trademark Office, which will come from a trademark examining attorney. Likewise, to preserve the trademark in good standing there will be additional steps that you must take after the trademark has issued.

What’s in a name? Well likely far more than most businesses realize. Your business name is how people will identify with your goods and services, so you want to have one identity that is all your own. Simple enough really, at least in concept, but making a mistake at the selection stage will prove costly. You really need to be picking a business name that gives you the opportunity to create a unified Internet marketing and branding strategy, from the domain name you select to your usernames and identity on popular social media and social networking sites like Twitter, Facebook and LinkedIn.

International trademark activity recovered during 2010, according to the World Intellectual Property Organization (WIPO), which received 39,687 applications under the 85-member Madrid System for the International Registration of Trademarks (“the Madrid system”). This increase in application from 2009 to 2010 represents a 12.8% rate of growth. Growth was the largest for the Republic of Korea (+42.2%), China (+42%), Italy (+38.7%), United States of America (+29.6%), European Union (+26.9%) and Japan (+20.2%).

A common misconception is that a website that just advertises your goods or services can be a trademark. It can’t. The domain has to be a unique source indicator all on its own, meaning it has to tell people what your goods or services are on its own. Basically, if your domain name is just an Internet address where your customers can find you, it can’t be registered. It just tells people where to find you. It is merely incidental to your primary business purpose.